USPTO Provides Guidance on Inventorship of AI-Assisted Inventions

The United States Patent and Trademark Office (USPTO) recently issued guidance on how the USPTO will determine inventorship for artificial intelligence (AI)-assisted inventions (the “Guidance”). The Guidance explains that inventions created solely by AI are not patentable, as AI cannot be named as an inventor. In contrast, inventions developed by a joint effort between AI and a human inventor can be patentable if the human inventor makes a significant contribution to the invention. In such a situation, the human inventor would be considered the sole inventor, regardless of the contribution made by the AI. The Guidance is effective as of February 13, 2024, but may change after a public comment period closes on May 13, 2024.

The Guidance is premised on the Federal Circuit’s holding in Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), that “only a natural person can be an inventor, so AI cannot be.” In Thaler v. Vidal, the Federal Circuit explained that 35 USC § 100(f) defines an inventor as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” The Federal Circuit, relying on Supreme Court precedent, held that the term “individuals” refers only to humans with respect to inventorship. Therefore, the Federal Circuit found that AI cannot be included as an inventor on a patent application because AI is not human.


The Guidance explains that just because AI assisted in the development of an invention does not mean the invention is unpatentable. Rather, as long as a human made “significant contributions” to the invention, the invention may be patentable, with that human listed as the inventor. The Guidance notes that the Pannu factors should be used to determine whether the human made a significant contribution to an AI-assisted invention, as required by the Federal Circuit’s test for inventorship articulated in Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998). Under the Pannu factors, to be considered an inventor, a human must have: (1) contributed in some significant manner to the conception of the invention; (2) made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention; and (3) did more than merely explain well-known concepts and/or the current state of the art. Pannu v. Iolab Corp., 155 F.3d 1344 (Fed Cir. 1998). As the Guidance explains, inventorship of AI-assisted inventions is made on a case-by-case and claim-by-claim basis. As such, every claim in a patent application must have at least one human inventor who significantly contributed to that claim.


The Guidance acknowledges that determining whether a human’s contribution to an AI-assisted invention is significant “may be difficult to ascertain, and there is no bright-line test.” To assist in the determination, the Guidance sets forth a non-exhaustive list of guiding principles to “help inform the application of the Pannu factors”:


(1) As long as a human inventor meets the Pannu factors, using AI does not negate the contributions of that human for determining inventorship.


(2) A human broadly recognizing a problem or having a general goal that is presented to an AI likely does not qualify that human as an inventor without further conception contributions. However, a significant contribution could still be shown if the human constructs a prompt in view of a specific problem to elicit a particular solution from the AI.


(3) A human solely reducing an AI contribution to practice would likely not be considered a significant contribution to the invention. However, a human who makes a significant contribution to the output of the AI to create an invention may be an inventor.


(4) A human developing essential building blocks that allow an AI to generate an invention may be considered a significant contribution to the invention. Essential building blocks can include designing, building, and/or training the AI in view of a specific problem to elicit a particular solution.


(5) A human simply owning or otherwise managing an AI does not make that human an inventor.


The fact-specific nature of what constitutes a significant contribution in AI-assisted inventions is likely to be litigated, especially as AI increases in use. However, the Guidance provides a practical framework for determining inventorship in AI-assisted inventions.